Bombay HC Upholds Injunction Against "New Indian Express" Using Mark For Sponsored Events Outside Assigned Southern Territories
The Court held that the appellant's use of the mark "New Indian Express" for sponsored commercial events outside the territories assigned under the parties' settlement arrangements was contrary to the understanding governing its use and amounted to an impermissible exploitation of the mark.
The Bombay High Court has upheld an interim injunction restraining Express Publications (Madurai) Pvt. Ltd. from using the mark "New Indian Express" for sponsored commercial events outside the southern States and Union Territories assigned to it under the settlement arrangements governing the parties' rights over the well-known "Indian Express" mark.
The Court was hearing a commercial appeal challenging an order of a Single Judge granting interim relief in favour of The Indian Express (P) Ltd. in a trademark dispute concerning the use of the "New Indian Express" mark beyond the territories and purposes permitted under a Memorandum of Settlement (MOS) and a supplemental MOS executed between the parties.
A Division Bench of Justice Bharati Dangre and Justice Manjusha Deshpande observed: "The use of the word “New Indian Express” by the appellant to conduct some sponsored commercial events though claimed to be stand-alone events in Mumbai from which it definitely generated revenue, thus runs contrary to the understanding arrived between the parties and with the Indian Express Group continuing to exercise its hold over the well-known mark."
Senior Advocate Zal Andhyarujina appeared for the appellant, while Senior Advocate Darius Khambata appeared for the respondent.
Background
The dispute arose out of a Memorandum of Settlement dated 05.02.1995 and a supplemental Memorandum of Settlement dated 12.08.2005 executed between the parties and subsequently received the imprimatur of the Madras High Court.
Under the settlement arrangements, the respondent retained ownership and control over the "Indian Express" mark, while the appellant was permitted to publish an English-language daily newspaper under the title "The New Indian Express" within specified southern States and Union Territories.
The controversy arose after the appellant organised an event titled "New Indian Express Mumbai Dialogue" in Mumbai with independent sponsors. The respondent contended that the use of the mark in connection with the event violated the territorial and usage restrictions contained in the MOS and supplemental MOS.
Aggrieved by the appellant's use of the mark outside the scope of the settlement arrangements, the respondent instituted commercial proceedings seeking injunctive relief.
Court's Observations
The Court examined the Memorandum of Settlement, the supplemental MOS and the rights flowing from those arrangements. The Bench found that the settlement documents consistently recognised the respondent's continuing control over the well-known "Indian Express" mark while conferring only a limited right upon the appellant to use the mark "The New Indian Express".
The Court observed: "The appellant is permitted to use the “The New Indian Express” only for publication of English language daily newspaper in five southern States and Union Territories and for no other purpose or for any other area or territory for any other use whatsoever."
Rejecting the appellant's contention that the Mumbai Dialogue event was merely a promotional exercise, the Court held that the settlement documents employed broad language intended to prohibit every form of exploitation of the mark beyond the limited rights expressly conferred upon the appellant.
The Bench observed: "The wide use of the terms “any use whatsoever” is intended to cover every mode of exploitation of the mark and therefore, the event “New Indian Express Mumbai Dialogue” conducted by the appellant with independent sponsors is revenue generation event and offer sufficient justification for being objected by the owner of the title ‘Indian Express’ who has permitted to use of the mark “New Indian Express” by the appellant on specific understanding being reached and purely as business arrangement."
The Court therefore found that the appellant's conduct in organising the sponsored event under the "New Indian Express" banner outside its assigned territories was prima facie contrary to the settlement arrangements between the parties.
Addressing the appellant's reliance on registration of the mark, the Court held that registration could not override the restrictions voluntarily accepted under the MOS and supplemental MOS.
The Bench observed: "The registration of the mark by the Registrar of Trade Marks do not confer any right on the appellant as while obtaining the registration, the restriction imposed upon its use by the MOS and the supplemental MOS which received an imprimatur from the Madras High Court was not brought to the notice of Registrar."
The Court further considered the appellant's contention that the respondent had acquiesced in promotional and advertising activities outside the assigned territories. Examining the record, the Bench found that while the parties had previously entered into a Joint Advertisement Agreement (JAA), the arrangement stood terminated and could not be treated as a continuing or permanent consent for nationwide use of the mark.
The Court observed: "Indian Express Group never acknowledged the conduct of the events for promotion though as far as advertisements are concerned, since there was a JAA which was executed by the parties recording consensual terms but even it was terminated with effect from 20.01.2011 and therefore, it cannot be definitely construed as open ended or permanent consent conferred on the appellant for PAN India use. After 2011, since no such arrangement continued and particularly with the IPAB order, it is imperative for the appellant to restrict itself to the territories assigned to it and strictly abide by the MOS and supplemental MOS."
The Bench consequently concluded that the appellant was bound by the territorial and usage restrictions contained in the MOS, the supplemental MOS and the subsequent orders governing the parties' rights.
Conclusion
Holding that the appellant's use of the "New Indian Express" mark for a sponsored commercial event outside the territories assigned to it under the settlement arrangements was contrary to the understanding between the parties, the Bombay High Court upheld the interim injunction granted in favour of The Indian Express (P) Ltd.
The Court held that the appellant's entitlement to use "The New Indian Express" remained confined to publication of its English-language daily newspaper within the assigned southern States and Union Territories and did not extend to sponsored commercial events or other forms of exploitation of the mark beyond the scope of the settlement arrangements.
Cause Title: Express Publications (Madurai) Pvt. Ltd. v. The Indian Express (P) Ltd. (Neutral Citation: 2025:BHC-OS:13694-DB)
Appearances
Appellant: Senior Advocate Zal Andhyarujina with Advocates Revati Desai, Pratyush Gupta and Deepak Y. Chitnis instructed by Deepak Chitnis-Chiparikar & Co.
Respondent: Senior Advocate Darius Khambata with Senior Advocate Arun Mohan, Advocates Abhinav Chandrachud, Pranit Kulkarni, Nishita Gupta and Tejasvi Ghag instructed by Poorvi Kamani.
